WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tang Freres v. WhoisGuard Protected, WhoisGuard, Inc. / Tang Franck

Case No. D2020-2471

1. The Parties

The Complainant is Tang Freres, France, represented by Inlex IP Expertise, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Tang Franck, Italy.

2. The Domain Name and Registrar

The disputed domain name <tangs-freres-fr.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2020. On September 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 29, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2020.

The Center appointed Steven A. Maier as the sole panelist in this matter on November 30, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a corporation registered in France. It is an operator of grocery stores providing Asian food products.

The Complainant is the owner of various registrations for trademarks comprising or including the term TANG FRERES. Those registrations include, for example, European Union Trade Mark number 005695077 for the word mark TANG FRERES, registered on June 5, 2012 for goods and services in various classes.

The disputed domain name was registered on September 15, 2020.

According to evidence submitted by the Complainant, the disputed domain name has resolved to a website which contains pay-per-click (“PPC”) links to providers of Asian foods, groceries, and related goods and services.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has been a leading brand in providing Asian food in France since 1976. It operates 10 stores in France and maintains an online presence at websites at “www.tang-freres.com” and “www.tang-freres.fr”, both of which have operated since 2005. The Complainant exhibits materials from its website which evidence its history and business activities.

The Complainant submits that the disputed domain name <tangs-freres-fr.com> is identical or confusingly similar to a trademark in which it has rights. It states that the disputed domain name wholly incorporates its TANG FRERES trademark, with the addition only of a letter “s”, which represents evidence of “typosquatting” and the term “fr”, which is clearly intended to indicate France.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has never authorized the Respondent to use its TANG FRERES trademark, that the Respondent has not commonly been known by that name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. While the Complainant notes that the Registrar identified the underlying registrant of the disputed domain name as “Tang Franck”, it submits that even if this is a genuine name, then that name is not the same as its trademark TANG FRERES or the term “tangs-freres” as used in the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant says that its TANG FRERES trademark is distinctive and is widely known, at least by French consumers, and that it is obvious that the Respondent must have had the Complainant’s trademark in mind when it registered what amounts to an impersonation of that trademark. The Complainant refers again to the additional letter “s” included in the disputed domain name and contends that this can only be viewed as evidence of “typosquatting”.

The Complainant contends that, not only did the Respondent register the disputed domain name behind an anonymity shield, but it has also provided what are obviously false contact details to the Registrar: while the Respondent refers to a supposed street address in Paris, Italy, there is no such street address in Paris, France and no city of Paris in Italy.

The Complainant refers to the website to which the disputed domain name resolves and states that this comprises PPC links to goods and services similar to those offered by the Complainant. The Complainant contends that consumers will obviously assume that the website is operated by the Complainant and will assume that it is not functioning correctly, which is damaging to its business.

The Complainant also submits that the disputed domain name has been configured for email. It refers to another domain name, <tangs-freres.fr>, which it says was used for a “phishing” email scam, including the sending of emails impersonating the Complainant’s CEO. The Complainant says that it suspects the disputed domain name is controlled by the same registrant as that other domain name and is intended to be used for similar purposes.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registered trademark rights in the mark TANG FRERES. The Panel finds that mark to be distinctive in nature and to be commonly associated with the Complainant and its business, particularly in France. The disputed domain name, <tangs-freres-fr.com>, wholly incorporates the Complainant’s trademark, with the addition of the letter “s”, two hyphens, and the term “fr”. None of these additions prevents the Complainant’s trademark from being recognizable within the disputed domain name and the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant’s trademark TANG FRERES is distinctive in nature and the Panel can conceive of no reason for the Respondent to have registered the disputed domain name otherwise than to refer to the Complainant’s trademark and to take unfair advantage of it. The Panel accepts the Complainant’s contention that the Respondent’s inclusion of the letter “s” in the disputed domain name is strongly suggestive of “typosquatting” and adds further to the impression of registration in bad faith.

In the view of the Panel, the disputed domain name is inherently misleading in nature, comprising an impersonation of the Complainant that is bound to suggest to Internet users that it is operated or authorized by the Complainant. Further, the Respondent has used the disputed domain name to resolve to a website containing PPC links to goods and services similar to those offered by the Complainant, which must be assumed to generate revenue for the Respondent. The Panel therefore finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

The Panel further accepts the Complainant’s evidence that the Respondent has provided what are obviously false contact details to the Registrar. However, the Panel makes no finding concerning any connection between the disputed domain name and the other domain name <tangs-freres.fr> referred to by the Complainant, as there is insufficient evidence in that regard.

The Panel concludes in the circumstances that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <tangs-freres-fr.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: December 4, 2020